Smith v. Johnson.

ROBERT P. SMITH 28. D. GRIFFING JOHNSON. IN EQUITY.

On a motion for a provisional injunction, for the alleged violation of a copyright for a map, a reference will not be made to a Master to examine the rival maps, and report the facts, with his opinion.

Such a motion must be disposed of on the moving papers of the plaintiff and the affidavits on the part of the defendant.

(Before INGERSOLL, J., Southern District of New York, January 4th, 1859.)

THIS was an application for a provisional injunction, to restrain the defendant from publishing and selling a map, in violation of a copyright granted to the plaintiffs.

Alfred Conkling, for the plaintiffs.

Peter Y. Cutler, for the defendant.

INGERSOLL, J. It does not satisfactorily appear that what the defendant has thus far done is, or what he intends to do will be, in violation of the rights of the plaintiffs. The proof on the part of the defendant is explicit, that, in preparing his map, he has used materials which he had a right to use, and that, in the production of his work, so far as it has progressed, he has not been aided by any of the maps of the plaintiffs. Neither does it appear that he will, in the further progress of his work, infringe upon any of the rights of the plaintiffs. Judging from the affidavits which he has exihibited, he intends to make his map from materials and sources to which the plaintiffs have no exclusive right. Should it hereafter appear, in the further progress of this suit, that the defendant is doing anything in contravention of the exclusive rights secured to the plaintiffs, the motion for an injunction can be renewed.

It has been suggested that it should be referred to a Master, to examine the maps of the plaintiffs, and also the map of the

Poppenhusen v. The New York Gutta Percha Comb Company.

defendant, and to report the facts as they may be made to appear to him, with his opinion on the question of the infringement of right. Such a course is sometimes adopted upon the final hearing, but not when the question comes up on a motion for a preliminary injunction. Such motion must be disposed of on the moving papers of the plaintiffs, and the affidavits on the part of the defendant in opposition thereto.

I do not see sufficient ground to grant the injunction prayed for. The motion must, therefore, be denied.

CONRAD POPPENHUSEN

vs.

THE NEW YORK GUTTA PERCHA COMB COMPANY. IN EQUITY.

Where a defendant in a patent suit was enjoined from the application of tin-foil or its equivalents, during the process of vulcanizing india-rubber, to preserve the form of the material, and subsequently used for that purpose sheets of tin something like roofing tin: Held, that such sheets were not tin-foil or its equiv. alent.

(Before INGERSOLL, J., Southern District of New York, January 4th, 1859.)

THIS was a motion for an attachment for an alleged contempt in violating an injunction. The facts are sufficiently stated in the opinion of the Court.

Edwin W. Stoughton and Charles M. Keller, for the plaintiff.

George Gifford, for the defendants.

INGERSOLL, J. In order to determine whether this injunc tion has been violated, it is necessary to determine what the defendants have been restrained from doing. That is determined by a reference to the opinion of the Court, (ante, p. 184,)

Poppenhusen v. The New York Gutta Percha Comb Company.

in this suit, on which the injunction was ordered to issue. Previous to that suit, there had been an action at law tried, in which the Court put a construction upon a certain patent owned by the plaintiff, and called the Meyer patent, and in which the jury decided that the defendants had infringed upon the rights of the plaintiff secured by that patent. The patent is for the use of tin-foil and its equivalents, in the vulcanization of india-rubber and other vulcanizable gums. The specification of the patent shows that the nature and object of the invention of Meyer was, to give desired forms and shapes to the material commonly known as the hard compound of vulcanizable caoutchouc, by heating, hardening and curing the material, while it is covered by, and in contact with, tin-foil, or similar sheets of other metals. In the specification, the essential means are pointed out by which the patentee obtains this object. He takes a piece of the prepared compound in its green state, and covers it with tin-foil. He then stamps or presses the plastic material into the form desired, stamping or pressing at the same time the sheet of tinfoil, so that it will completely cover, and be in contact with, the gum, and then subjects it to the heating process. It was held upon that trial at law, that the patent granted to the patentee the exclusive right to the use and application of tinfoil, or its equivalents, to the hard compound of india-rubber and gutta-percha, during the process of vulcanization, in the manner described, to preserve and retain, during the process of heating and hardening, the forms and shapes given to the material before the heating process commences, without any other pressure or mould. What was used by the defendants. in the infringement complained of, was tin-foil, and nothing else; and the jury found a verdict for the plaintiff. Subsequently, an injunction was issued, to restrain the defendants from the use and application of tin-foil, or its equivalents, to the hard compound of india-rubber and gutta-percha, during the process of vulcanization, in the manner described, to preserve and retain, during the process of heating and hardening, the forms and shapes given to the material before the heating

Poppenhusen v. The New York Gutta Percha Comb Company.

process commences, without any other pressure or mould. The injunction was for nothing else.

Since the injunction issued, the defendants have not used or applied tin-foil in the process of vulcanization, as above described. They have, however, used sheets of brass and sheets of tin, something like roofing tin, for that purpose; and it is claimed that the sheets so used are an equivalent for tin-foil, and therefore equally prohibited to be used by the defendants. It is not claimed that all plates or sheets of tin or other metal are an equivalent for tin-foil. The opinion of the Court on granting the injunction is against any such claim; for the Court say that it had been common, before the patent to Meyer, to place the material between plates of tin or other metal, so that the material would be in close contact with the plates, to preserve its form. It is admitted, that there is a substantial difference between such plates or sheets of metal and tin-foil. But it is claimed that the sheets of brass and tin used by the defendants are an equivalent for tin-foil; that they are substantially like it; that they perform substantially the same office in substantially the same way. They are not rigid. They are somewhat flexible, but not sufficiently flexible to make them an equivalent for tin-foil. They cannot be moulded into any desired shape and form, as tin-foil can. They are like rigid, plain plates or sheets fitted only for plain surfaces. They cannot be said to be tin-foil, or its equivalent; and the defendants were restrained only against the use of tin-foil or its equivalent.

The plaintiff claims that the patent is for the use and application, not only of tin-foil, but also of all sheets of metal which are not rigid. This construction was not put upon the patent, either on the trial at law, or on the application for the injunction. Such construction was not claimed on either of those occasions, The defendants were not restrained from the use and application of tin or other sheets of metal that were not rigid, but only from the use and application of tinfoil or its equivalent. Tin-foil does not include all sheets of metal that are not rigid. If it is to be claimed that the

4

Abranches v. Schell.

patent is for the use and application of all sheets of metal that are not rigid, the defendants should, if the patent will bear that construction, have an opportunity to show that the use and application of such sheets was not new when the patent was obtained. As yet, no such construction has been put on the patent. To dispose of the motion now before the Court, the only proper inquiry is-have the defendants, since the injunction was served upon them, used or applied tin-foil, or its equivalents, in the way they were ordered not to use or apply it?

From the best consideration I have been able to give to the subject, I am not satisfied that the defendants have used either tin-foil or its equivalents. Consequently, they have not violated the injunction. The motion must, therefore, be denied.

INNOCENCIO DE ABRANCHES AND OTHERS vs. AUGUSTUS SCHELL.

Where a defendant, sued in a State Court, applied to this Court by petition, praying for the removal of the suit to this Court, under the 3d section of the Act of March 2d, 1833, (4 U. S. Stat. at Large, 633,) on the ground that the suit was for acts done by him under the revenue laws of the United States, and obtained a certiorari from this Court to the State Court, to certify the proceedings on file in that Court, and the clerk of the State Court returned that there were no proceedings on file in his office in the suit, and the defendant's attorney then entered a rule in this Court for the plaintiff to declare in twenty days, and notice of the rule was served on the plaintiff's attorneys, who admitted service of it, but failed to declare, and a judgment as in case of nonsuit was then entered against the plaintiff: Held, that such judgment was regular.

The admission by the plaintiff's attorney, of service of the rule to declare, waived any informality attending the removal of the cause to this Court. All that the statute requires is, that it shall appear, from the petition, that the defendant was sued on account of acts done by him under the revenue laws of the United States. It does not require a statement of the cause of action or the kind of process.