
    BAKER MANUFACTURING CO. v. WASHBURN & MOEN MANUFACTURING CO. et al.
    
    
      (In the Circuit Court of the United States, Southern District of Iowa, Central Division,
    
    
      September, 1883
    
    
      On motion to dissolve or modify injunction.)
    i. Injunction—Mandate of Writ Must Correspond with Prayer. The mandate of a writ of preliminary injunction should go no further than the allegations of the bill and the prayer for relief, and where by inadvertence or otherwise, a writ has been issued that is too sweeping in its terms, it will be modified upon motion.
    
      2. Same—Equity—Injunction Against Suing at Law. Equity will not restrain by injunction a party from suing at law upon a claim which can be as well defended at law as in equity. Held, Accordingly, that a suit upon a contract of license whereby complainant was authorized to manufacture barbed wire for a certain royalty, will not be enjoined upon the ground that the licensor has, by licensing others at a lower rate, reduced the price to be paid by complainant. If this be true, the remedy of complainant when sued at law will be plain, speedy and adequate.
    3. Same—Declaring Forfeiture—Injunction. Where a license to manufacture and sell a patented article for a term of years has been gran'ed by the patentee, upon terms agreed upon as to royalty, etc., and the licensee has entered upon the manufacture in pursuance of such license, a Court of equity will enjoin the patentee from declaring a forfeiture of the license for non-payment of the royalty, where there is a satisfactory showing that the royalty claimed is not in fact due and unpaid. This upon the ground that a public declaration of forfeiture might greatly injure the business of the licensee, and cause him to suffer damages not readily to be ascertained and compensated in money.
    The complainant is a corporation engaged in the manufacture of barbed wire under a license . from the defendants, who are the owners of certain letters patent covering not only the product itself, but also machines for manufacturing the same. Among other things the said license provides as follows:
    “The royalty to be paid under this license shall not be greater than that charged to any other party licensed after the first day of January, A. D. 1881, under the said several letters patent, or any of them, hereinbefore mentioned by date and number, by said Washburn & Moen Manufacturing Company; that is, if said Washburn & Moen Manufacturing Company shall hereafter conclude to and does license any other party or parties during the continuance of this license, to manufacture and sell barbed fence wire in the United States and Territories, and this license is confined to the United States and Territories, under said letters patent, or any of them, hereinbefore mentioned by date or number, at a less sum per pound than three-fourths (f) of a cent, then and thereafter the royalty to be paid by said Baker Manufacturing Company to said Wash-burn & Moen Manufacturing Company under this license shall be the same as such reduced royalty.”
    The bill avers that since the execution of said license, the defendants have executed to one Jacob Haish, of Chicago, Illinois, a contract of license, whereby the said Haish is to pay no royalty or license fee for the first four thousand tons of wire to be manufactured and sold annually by him, and that for the sécond four thousand tons the said Haish is to pay a royalty or license fee of fifty cents per hundred pounds only; and that ever since the granting of said license the said Haish has continued to manufacture and sell barbed wire by virtue thereof, by reason whereof the plaintiff claims to be entitled to have its license so modified as to conform the royalty to be paid to that specified in the license given to said Haish. It is averred that since discovering the existence and terms of the contracts between defendants and said Haish, complainant has paid royalty only under protest; and has demanded a modification of its license, which defendants refuse to make or grant; also that defendants threaten to annul plaintiff’s license if plaintiff ceases to make payments of royalty as therein provided, and to bring suit against it for infringement of the patent owned and controlled by them.
    The prayer of the bill is as follows:
    “Wherefore plaintiff prays that a decree of this Court may be entered herein, adjudging that plaintiff’s said license be so modified as to conform in the royalty to be paid to the license so granted by defendants to said Jacob Haish.
    “That pending this suit an injunction issue restraining said defendants, or either of them, or their agents or attorneys, from annulling, or attempting to annul or revoke, said license until the final decree shall be entered herein, and further restraining said defendants, or either of them, or their agents or attorneys, from instituting a'ny suit or action against the plaintiff by reason of its failure to pay the royalty provided for in and by said license, and for such other and further relief as to equity and good conscience may seem meet, and costs.”
   McCrary, Circuit Judge.

First—The preliminary injunction is broad enough in its terms to restrain the defendant from annulling or attempting to annul or revoke the complainant’s license, for any cause whatever, and it therefore goes beyond the scope of the bill. The purpose of the bill is to prevent a cancellation of the complainant’s license because of its refusal to pay a higher royalty than that exacted by defendants from Haish. The mandate of the writ should go no further than the allegations and prayer of the bill, and it will be modified accordingly.

Second—In so far as the injunction restrains the defendants from instituting any suit or action against complainant to recover the royalty provided in the license of complainant, it must be dissolved, for the reason that it is wholly unnecessary for the protection of complainant’s rights. If the allegations of the bill be true, the amount of royalty to be paid by complainant has been reduced by the action of defendants in ranting license to another at lower rates, and this being so, the complainant is only bound to pay or tender the reduced rate, and its license will remain in full force. If sued for such royalty its defense at law is ample, and its remedy plain, speedy and adequate.

It needs no affirmative aid from any Court, either of law or equity, to enable it to defend. It can protect its rights by its own action in complying, or offering to comply, with the terms of its contract. The defense of such a suit would be that of a tender of payment or satisfaction in full of the demand sued upon, and it will not, of course, be claimed that the aid of a Court of equity is required to establish it. Florence Sewing Machine Co. v. The Singer Manufacturing Co., 8 Blatchford, 113.

Third—We think that so much of the injunction as restrains the defendant from declaring a forfeiture of the complainant’s license for non-payment of royalty at the rate originally fixed therein, should remain in force. A public declaration of such a revocation might greatly injure the business of the complainant, and the damages could not readily be ascertained and compensated in money. It would destroy, in a great measure, confidence in the right and title of complainant, and thus disable it from making sales. Persons dealing m patented articles must be able to assure the public that they have a clear right to do so, in order to secure patronage, since both seller and buyer may be liable in damages, if the article is sold in violation of the rights of the owner of the patent-right. Upon this point we concur in the views expressed by the Supreme Judicial Court of Massachusetts, in Florence Sewing Machine Co. v. Grover & Baker Sewing Machine Co., 110 Mass., 1.

Wright, Cummins & Wright, for complainant.

Lehman & Park, for respondent.

Let an order be entered in accordance with this opinion.  