The Thomas A. Edison Papers Digital Edition

Transcription

IN THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF NEBRASKA.
Edison Phonograph Company, Complainant,
v.
The Wittman Company, Respondent.
No. 101.V.
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MEMORANDUM OPINION.
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MUNGER, D. J.
This is an action brought by complainant to restrain the respondent from disposing of certain phonographs having the serial number placed thereon erased or obliterated.
The petition is framed upon the theory that the obliterating of the serial number is an infringement of complainant's patent. There does not appear to have been any contract between complainant and respondent. The articles in question were purchased by respondent from other dealers or jobbers, but it appears from the evidence that respondent was aware of the provisions of the contracts under which the machines were placed upon the market for use and sale. The objection of respondent to the introduction in evidence of the alleged contract between the Omaha Bicycle Company and respondent, on the ground that no foundation for the same existed, is sustained, and such contract has not received consideration.
There was placed upon each machine a plate, having plainly and distinctly engraved thereon, among other words, the following:
"This machine is sold upon the condition that it is licensed to be used or vended only so long as this serial number S_____________ is not removed or changed in whole or in part." It is alleged that the serial numbers have been obliterated, and it is charged that such obliteration was done by respondent. That the serial numbers were obliterated and that it was done by respondent is not denied, but it is claimed that such act does not constitute an infringement, and as there was no contrast between complainant and respondent, the action cannot be maintained.
The Court of Appeals of this Circuit in Dickerson v. Tinling, 84 Fed. 192-195, with reference to the sale of a patented article upon conditions, uses this language:
"If the corporation sold the patented article subject to such a restriction, the purchasers, with notice of this limitation, whether immediate or remote, could acquire no better right than strangers to infringe upon the monopoly secured by the patent."
This, in effect, is a holding that the owner of a patented article may, in disposing of the same, impose such conditions as he sees fit, and a violation of those conditions upon the part of any subsequent owner, with notice thereof, would be an infringement of the patent. Such seems to be the law as announced in Edison Phonograph Company v. Pike, 116 Fed. 893.
For these reasons the injunction, as prayed, will be granted, upon complainant executing to respondent a bond to be approved by the Clerk of the Court, conditioned as provided by law, in the sum of $5,000; such bond to be given within ten days.
The question in the present is not free from doubt, but if complainant is not entitled to the relief upon the facts shown by the bill and evidence, it is because there was no contract between complainant and defendant, and that the obliteration of the serial number does not constitute an infringement. Should the temporary order of injunction be refused no appeal could be taken until a final decree in this Court. By granting the temporary order of injunction respondent can appeal directly from the granting of such order, pursuant to the act of June 9, 1900, page 660, Vol. W. S. State. at Large. Such appeal is to be taken within 30 days from the granting of the injunction and shall have precedence in the Court of Appeals, so that if I am wrong the rights of the parties can be determined in the Appellate Court at an early day during the May Term.
This reason influences me in granting the injunction in this case.