STONE, Circuit Judge.
Action by William H. Woerheide and the-Kant-Eeak Kleet Company against the Barber Asphalt Paving Company to have certain contracts declared void. Additional relief, such as might follow annulment of the contracts, was asked, in the nature of an accounting and a prevention of further institution or prosecution of suits affecting patents covered by the contracts. Prom a dis- < missal of the bill plaintiff appeals.
As a bar to any consideration of the case upon its merits appellee interposed the charge that appellants come with “unclean hands.” We have carefully examined the entire evidence hearing thereon, and find it does not sustain the construction placed thereon by appellee. The original contract, dated March 15, 1910, was followed by two contracts, dated February 25, 1911, and June 8, 1914, each of which was expressed as being in. addition to and as modifying the contract or contracts preceding it. They covered the exploitation and sale of two patented metal cleats, used to secure manufactured roofing in place, known as the Kant-Peak Kleet and the Kontinuous Kant-Eeak Kleet, or Klincher-Kleet. Such portions as are necessary to an understanding of the points decided are placed in the margin.1
[198]*198The validity of these contracts is attacked on the ground of lack of mutuality in that certain vital executory obligations of appellee are so uncertainly defined in the contract that they are incapable of judicial ascertainment and enforcement. The three contracts were intended to be treated as one agreement, are susceptible of being so regarded, and will be so considered. There was no attack upon the contracts until some months after the last of the above modifying contracts. Therefore the contention that the contract was uncertain and indefinite need be determined only in connection with the agreement in its final form as affected by the two additions and modifications. However, the sum total of appellee’s obligations as outlined by all of the contracts - is best reached by first considering those obligations in each of the three contracts seriatim, and afterwards summarizing such as remained active in the final agreement.
[ 1 ] A better conception of the value to he placed upon the contract provisions may be gained if the situation of the parties at the time [199]*199is understood. Appellant Woerheide liad shortly before invented a method of fastening in place prepared roofing. This device was to replace the broadheaded nails and cement then generally in use. It was the custom oí manufacturers of prepared roofing to pack and ship therewith the necessary fastenings. It was therefore highly advantageous, if not necessary, that, a sales .arrangement for these cleats be made with some manufacturer of such roofing. Appellee was such manufacturer on a large scale, and packed with its roofing nails and cement as fasteners. The cleat had been on the market a year and had, considering its novelty, met with a degree of success. However, it could, in that, short time, hardly ltd said to have established a place in the trade. It was still rather a novelty, apparently with an attractive future. If it were successful, its exclusive control would be of value to a manufacturer of roofing. In this setting the original contract was made.
The provisions therein affecting the appellee refer to the exploi[200]*200tation and to the purchase of the cleats- — to the creation of a demand for them and the supply of that demand exclusively through the appellee. What obligations in these directions were placed by the original contract upon appellee? The contract of 1910 provided that the appellee agreed to purchase the cleats “in such quantities as may be necessary to fill its orders for the same”; to “feature and offer to the trade their high-grade roofings, packed with ‘Kant-Teak Kleets/ hut reserve the right to pack and sell said goods with or without the cleats, or otherwise as the party of the second part [appellee] may desire”; and “in connection with its current advertising of roofing material to include favorable references to said cleat and to advocate its use and sale in such periodicals as it may deem advisable; but as this advertising is without expense to the parties of the first part the extent of it is left to the sound judgment of the party of the second part.” In the same clause it defined “high-grade roofings” as being its “standard [201]*201Genasco roofings,” or goods of the same quality packed in private brands, and continued:
“It being the intent oí this clause that in return for the exclusive sales rights, etc. iacquired by the party ol the second part, they will advertise and advocate the sale oí their high-grade roofing packed with ‘Kant-Leak Meets,’ as long as there is a substantial demand therefor.”
Summarizing — as to exploitation, it agreed to “feature” and offer to the. trade the cleats with a certain brand of high-grade roofing, to include favorable references to the cleat in its current advertising of roofing material, and to advocate its use and sale in such periodicals as it may deem advisable. This advertising- and advocacy of the cleats to be to the extent deemed advisable by appellee, and to continue so long as there was a substantial demand for the cleats. The net result of this obligation is that appellee is to exploit the cleat in the various ways generally set forth, but the time for, instruments, and extent of this exploitation are not defined within any ascertainable limits. The appellee could do little or much in presenting the cleats to the trade,, and yet he within the contract.
As to purchase of the cleats, it agreed to purchase in such quantities as might be necessary to1 fill its orders therefor, but expressly reserved “the right to pack and sell said goods with or without cleats oi otherwise,” as it “may desire.” Appellee was not obligated to buy a single set of cleats unless it might desire to do so. The entire value to appellants of a contract of sale was the creation and satisfaction of a demand- for the cleat. Those were the only subjects concerning which the appellee even pretended to' bind itself, and in those regards it did not define its obligations. Nor can it be said that, although the four corners of the contract do not give this definition, they do point to where it can be found in extraneous facts, as where a contract is made to supply the needs of an established business. Here there was no established business in the legal sense in which that term is used in such connection. It is true that appellee had an established business in prepared roofing, and as a part thereof furnished roofing fasteners, but it did not agree unconditionally to substitute cleats as the fastener to be sent with all or any definite ascertainable portion of its roofing. On the contrary, it agreed to undertake to create a demand for this cleat, then practically a novelty. It did not bind itself to meet even the demand it might arouse. Nor can it be said that it assumed a business risk through an attempt to introduce a novelty, because it entirely controlled tlie manner and extent of that attempt.
The outcome of repeatedly expressed dissatisfaction by appellants with the small purchases by appellee was tlie addendum agreement, of February 25, 1911. This agreement made several changes in the existing arrangement. Up to that time the appellee had offered its Genasco roofing with cleats at a higher price than with old style fastenings.
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STONE, Circuit Judge.
Action by William H. Woerheide and the-Kant-Eeak Kleet Company against the Barber Asphalt Paving Company to have certain contracts declared void. Additional relief, such as might follow annulment of the contracts, was asked, in the nature of an accounting and a prevention of further institution or prosecution of suits affecting patents covered by the contracts. Prom a dis- < missal of the bill plaintiff appeals.
As a bar to any consideration of the case upon its merits appellee interposed the charge that appellants come with “unclean hands.” We have carefully examined the entire evidence hearing thereon, and find it does not sustain the construction placed thereon by appellee. The original contract, dated March 15, 1910, was followed by two contracts, dated February 25, 1911, and June 8, 1914, each of which was expressed as being in. addition to and as modifying the contract or contracts preceding it. They covered the exploitation and sale of two patented metal cleats, used to secure manufactured roofing in place, known as the Kant-Peak Kleet and the Kontinuous Kant-Eeak Kleet, or Klincher-Kleet. Such portions as are necessary to an understanding of the points decided are placed in the margin.1
[198]*198The validity of these contracts is attacked on the ground of lack of mutuality in that certain vital executory obligations of appellee are so uncertainly defined in the contract that they are incapable of judicial ascertainment and enforcement. The three contracts were intended to be treated as one agreement, are susceptible of being so regarded, and will be so considered. There was no attack upon the contracts until some months after the last of the above modifying contracts. Therefore the contention that the contract was uncertain and indefinite need be determined only in connection with the agreement in its final form as affected by the two additions and modifications. However, the sum total of appellee’s obligations as outlined by all of the contracts - is best reached by first considering those obligations in each of the three contracts seriatim, and afterwards summarizing such as remained active in the final agreement.
[ 1 ] A better conception of the value to he placed upon the contract provisions may be gained if the situation of the parties at the time [199]*199is understood. Appellant Woerheide liad shortly before invented a method of fastening in place prepared roofing. This device was to replace the broadheaded nails and cement then generally in use. It was the custom oí manufacturers of prepared roofing to pack and ship therewith the necessary fastenings. It was therefore highly advantageous, if not necessary, that, a sales .arrangement for these cleats be made with some manufacturer of such roofing. Appellee was such manufacturer on a large scale, and packed with its roofing nails and cement as fasteners. The cleat had been on the market a year and had, considering its novelty, met with a degree of success. However, it could, in that, short time, hardly ltd said to have established a place in the trade. It was still rather a novelty, apparently with an attractive future. If it were successful, its exclusive control would be of value to a manufacturer of roofing. In this setting the original contract was made.
The provisions therein affecting the appellee refer to the exploi[200]*200tation and to the purchase of the cleats- — to the creation of a demand for them and the supply of that demand exclusively through the appellee. What obligations in these directions were placed by the original contract upon appellee? The contract of 1910 provided that the appellee agreed to purchase the cleats “in such quantities as may be necessary to fill its orders for the same”; to “feature and offer to the trade their high-grade roofings, packed with ‘Kant-Teak Kleets/ hut reserve the right to pack and sell said goods with or without the cleats, or otherwise as the party of the second part [appellee] may desire”; and “in connection with its current advertising of roofing material to include favorable references to said cleat and to advocate its use and sale in such periodicals as it may deem advisable; but as this advertising is without expense to the parties of the first part the extent of it is left to the sound judgment of the party of the second part.” In the same clause it defined “high-grade roofings” as being its “standard [201]*201Genasco roofings,” or goods of the same quality packed in private brands, and continued:
“It being the intent oí this clause that in return for the exclusive sales rights, etc. iacquired by the party ol the second part, they will advertise and advocate the sale oí their high-grade roofing packed with ‘Kant-Leak Meets,’ as long as there is a substantial demand therefor.”
Summarizing — as to exploitation, it agreed to “feature” and offer to the. trade the cleats with a certain brand of high-grade roofing, to include favorable references to the cleat in its current advertising of roofing material, and to advocate its use and sale in such periodicals as it may deem advisable. This advertising- and advocacy of the cleats to be to the extent deemed advisable by appellee, and to continue so long as there was a substantial demand for the cleats. The net result of this obligation is that appellee is to exploit the cleat in the various ways generally set forth, but the time for, instruments, and extent of this exploitation are not defined within any ascertainable limits. The appellee could do little or much in presenting the cleats to the trade,, and yet he within the contract.
As to purchase of the cleats, it agreed to purchase in such quantities as might be necessary to1 fill its orders therefor, but expressly reserved “the right to pack and sell said goods with or without cleats oi otherwise,” as it “may desire.” Appellee was not obligated to buy a single set of cleats unless it might desire to do so. The entire value to appellants of a contract of sale was the creation and satisfaction of a demand- for the cleat. Those were the only subjects concerning which the appellee even pretended to' bind itself, and in those regards it did not define its obligations. Nor can it be said that, although the four corners of the contract do not give this definition, they do point to where it can be found in extraneous facts, as where a contract is made to supply the needs of an established business. Here there was no established business in the legal sense in which that term is used in such connection. It is true that appellee had an established business in prepared roofing, and as a part thereof furnished roofing fasteners, but it did not agree unconditionally to substitute cleats as the fastener to be sent with all or any definite ascertainable portion of its roofing. On the contrary, it agreed to undertake to create a demand for this cleat, then practically a novelty. It did not bind itself to meet even the demand it might arouse. Nor can it be said that it assumed a business risk through an attempt to introduce a novelty, because it entirely controlled tlie manner and extent of that attempt.
The outcome of repeatedly expressed dissatisfaction by appellants with the small purchases by appellee was tlie addendum agreement, of February 25, 1911. This agreement made several changes in the existing arrangement. Up to that time the appellee had offered its Genasco roofing with cleats at a higher price than with old style fastenings. To lessen this barrier to the sale of cleats, appellants agreed to reduce the price of cleats to appellee 2y% cents per set, and appellee agreed to lower its roofing price to the trade 5 cents per square, and to maintain the price at not to exceed 5 cents above that of the same grade of roofing offered with old style fastenings. [202]*202The uncontrolled option to pack the cleat with its Genascoi roofing was replaced by a provision that the cleats should be packed with all high-grade roofing, except in those instances where the customer might demand the old style. The parties also agreed to co-operate in an advertising campaign during the year of 1911 through literature, samples, and demonstrating boards featuring the cleats. This advertising matter was to be prepared and furnished by appellee to its customers gratis. The cost thereof was to be equally divided; the extent thereof to be determined by the appellee, with a maximum expenditure fixed for appellants. The net results of this addendum agreement upon the contract of 1910 were, so far as appellee’s obligations, as follows: It regulated the relative selling prices of high-grade roofing with cleats and with old-style, fastenings; it replaced appellee’s uncontrolled option to- pack in one high-grade roofing (Genasco) by a requirement to use cleats in all its high-grade roofing, except where customer objected; and it provided for an advertising campaign during that current year. The first two requirements were fixed, definite, and beyond control of appellee;- the last was controlled entirely by appellee.
For about eight months the parties proceeded under this arrangement, but not without friction. Appellants were still deeply disappointed at the amount of cleats ordered, and complained at length.. Appellee suggested a lower price of cleats in return for its further reducing its price of roofing packed with cleats to that of roofing packed with nails and cement. Appellants contend they never agreed to this change. However that may be, the appellee made the reduction in roofing price and insisted on paying appellants for cleats upon the basis suggested. As to whether this deduction in cleat price was proper became a matter of difference between the parties. The sum thus involved reached, in 1914, the amount of over $13,000. Appellants were getting into financial straits. Woerheide had in the meanwhile invented a modification of the Kant-Leak Kleet, known as the “Kontinuous Kant-Ueak Kleet,” or “Klincher-Kleet.” Under these circumstances the parties undertook to arrange for the past and future. This took form in a loan by appellee to appellants, a release by-appellants of all claim on account of the above reduction of cleat price, and a contract, dated June 8, 1914, adding to and modifying the earlier amended agreement. While these three matters were disposed of at o'r about the same time, they were not so1 related that the other two entered into or formed any part of the contract then made. This last contract imposed upon appellee obligations as follows: To accept delivery of and purchase, during the remainder of the year 1914, 150,000 sets of cleats, to be furnished at rate of 25,000 sets per month, paying 20 cents per set for Kant-Leak and 17 cents per set for Kontinuous Kleets, delivered at Maurer, N. J., or Madison, 111., as ordered by appellee, and to feature and offer Kontinuous Kleets with a brand of popular grade roofing until end of the agreement. By the concluding clause of this agreement “all of the provisions” of the prior amended agreement “shall likewise apply to the Kontinuous Kant-[203]*203Leak Kleet, * * * except as herein modified.” _ Under this broad provision it is thought would be included tlie obligation to include favorable references to tlie Kontinuous Kleet in appellee’s current advertising of roofing material, and to advocate its use and sale in such periodicals as it may deem advisable, the extent of such advertising and advocacy to be left to tlie sound judgment of appellee.
Treating the three agreements as one final agreement, a summary of the obligations of appellee thereunder is as follows: To feature aud offer to the trade the two cleats (Kant-Lcak with all of its high-grade roofing, and Kontinuous with a popular grade roofing) during the life of the patents; to include favorable references to both cleats in its current advertising of roofing material, and to advocate their use and sale in such periodicals as might seem advisable to appellee, such advertising and advocacy to continue during a substantial demand for the cleats, to the extent determined by the sound judgment of appellee; to pack Kant-Lcak Kleets with all high-grade roofing, except where the customers might demand old-style fastenings; to'maintain price of high-grade- roofing so- packed to within 5 cents per square of price with old-style fastenings; to purchase 150,000 sets (kind not specified) in last half of 1914 at monthly rate of 25,000 sets, delivered at Maurer, N. )., or Madison, 111. (as ordered by appellee), at 20 cents per set for Kant-Leak Kleets and 17 cents for Kontinuous Kleets. Of these obligations, which are so uncertain or indefinite that they cannot be determined aud enforced? The requirements to' feature and offer the cleats to the trade are definite as to duration but uncontrolled as to manner or extent. The requirement to advertise and advocate their use is left undefined as to extent. The requirement to pack Kant Leak Kleets with all high-grade roofing except where customer demands old-style is definite in the sense that it is an application to an established business (sale of higli-grade roofing with fastenings), the limits of which can be ascertained. The requirement as to maintenance of high-grade roofing price is definite. The requirement as to purchase of 150,000 sets in 1914 may have been indefinite in its terms, but it was performed in all substantial respects before any attempted rescission, and therefore must be regarded as definite. There is do requirement that appellee purchase any Kontinuous Kleets after 1914.
'file contract was for the life of the patents, which would have continued, after the attack upon the contract, for about 11 years on the Kant-Leak Kleet and about 17 on the Kontinuous Kleet. It cannot be said that any of the above obligations are subordinate in importance. Each has a direct bearing upon the volume of the purchase and sale of cleats, which was the one main object of the contract. Each was a material element of the consideration for which appellants assumed the obligations upon their part. They have not been fully or substantially performed, and some of them are incapable of full performance short, of the life of the contract. Several of them are not capable of measurement in case of breach, so that appellants could recoup therefor their damages. The contract therefore is void for uncertainty.
[204]*204[2, 3] Appellee contends that the purchase of 150,000 sets during 1914 under the contract is suqh performance as to save the contract from rescission, while appellants deny that such purchase was in accordance with the contract requirements. Both positions are untenable. The basis of appellants’ claim is that during the month of July, 20,500 instead of 25,000 sets were ordered; that appellee, during tire fall of 1914, failed to feature and advertise the cleats promptly; and that the orders came near the end of the month when it was very difficult to fill them. It is true that only 20,500 sets were purchased in July, and that the contract required 25,000 sets, but 30,000 sets were ordered for August, and 25,000 or more every succeeding month, making a total of more than 150,000 sets. This was such an inconsequential breach as not to affect appellee’s claim that, as to the number and monthly ratio, the performance was substantially in accord with the contract. As to the featuring and advertising, the contract requirement is so indefinite that almost any effort in good faith on appellee’s part would meet its demand, and there is no suggestion therein as to when this should be begun or done. It may also be said that appellee does not seem to have been remiss in that regard when the war and business conditions are considered. As to the orders for cleats being given at or near the month end, there is no limit of this sort in the contract. On the contrary, it requires appellants to keep on hand at all times enough cleats to meet appellee’s needs. Although appellee’s performance' of this part of the contract must be regarded as substantially complete, yet complete performance of only one of its five or six important executory contract obligations cannot prevent the avoidance of the contract, if others equally important remain executory and are legally uncertain. Santaella v. Lange, 155 Fed. 719, 84 C. C. A. 145; Cold Blast Transp. Co. v. Kansas City Bolt & Nut Co., 114 Fed. 77, 52 C. C. A. 25, 57 L. R. A. 696; Oakland Motor Co. v. Indiana Automobile Co., 201 Fed. 499, 121 C. C. A. 319; Velie v. Kopmeier, 194 Fed. 324, 114 C. C. A. 284; Hudson v. Browning, 264 Mo. 58, 174 S. W. 393; Higbie v. Rust, 211 Ill. 333, 71 N. E. 1010, 103 Am. St. Rep. 204; Killebrew v. Murray, 151 Ky. 345, 151 S. W. 662; Hopkins v. Iron Co., 137 Wis. 583, 119 N. W. 301. That every part of the consideration be definite or every part be indefinite is not the gauge of the validity of a contract. However, the law requires that the important, essential elements in the consideration be ascertainable with reasonable certainty. This is true because the law will not hold a party bound to a contract against his will, when the substance of what he is to get in return is executory, and is so shadowy in its outline that the other party can refuse to perform with impunity, since either the contract does not compel it, or no court can say what damage it has caused if it fail to act.
[4] Appellants, as a portion of their relief, ask an accounting. The facts reveal no basis for such. The evidence convinces that there has been substantial performance of the contract by both parties up to the date of attempted avoidance. The entire trouble is' found in the contract itself. It was not at its making strong enough to hold, and it had not, through performance, become so up to the time appellants saw fit to withdraw therefrom.
[205]*205The judgment should be reversed, with instructions to enter a decree declaring the contracts void, and the appellee without further right to use or sell cleats manufactured under the above patents, except such as it may have on hand at the date of said decree, and perpetually enjoining appellee from further institution or prosecution of suits or actions relating to said letters patent for the purpose of having any devices adjudged infringements thereof.