
    Smith A. Skinner, Resp’t, v. The Walter A. Wood Mowing Machine Co., App’lt.
    
      {Supreme Court, General Term, Third Department,
    
    
      Filed February, 1888.)
    
    1. Contract—Subject of.
    The parties to this action entered into an agreement whereby it was agreed, on the part of the plaintiff, that the defendant should have the exclusive right of using an oiler, invented by the plaintiff, on its mowing and reaping machines, and the right, but not exclusive, to use it on other machines, and on the part of the defendant, that it would use said oiler upon its mowing and reaping machines, and would pay the plaintiff therefor the reasonable value of such use. This action was brought to recover upon the agreement. No claim was made, on the part of the defendant, that the patent was invalid. Held, that whatever might have been the prior state of the art upon the subject of oilers, the plaintiff had something to sell.
    2. Same—Consideration—What will constitute.
    
      Held, that the deprivation on the part of the plaintiff, or the benefit to the defendant, arising through the grant of the monopoly, were either sufficient consideration for the contract.
    3. Same—Recovery upon—What sufficient to support.
    
      Held, that in order to recover, it was not incumbent on the plaintiff to show that the defendant had made use of its right, nor was it a defense to the action, that it had not.
    4. Same—Action for breach—Measure of damages.
    
      Held, that the measure of the plaintiff’s damages was the reasonable value of the use of the oiler on one of the machines manufactured by the defendant, multiplied by the actual number of machines manufactured.
    The defendant, desiring to obtain an improved device for an oil well cover, to be used on harvesting machines which it was engaged in manufacturing, its president, Walter A. Wood, spoke to the plaintiff about it and asked him if he could not get up something that would answer the purpose: Plaintiff made a rough model and submitted it to Mr. Wood, who approved of it and said he must get it patented, and referred him to Mr. Parsons, who had charge of dedefendant’s patent department. Upon an application drafted by Mr. Parsons, a patent was issued November 7, 1871.
    Subsequently plaintiff prepared a new model, which was submitted to Mr. Wood, and upon an application by plaintiff, which was also drafted by Mr. Parsons, another patent was issued, dated February 27, 1872. The referee finds as a fact, “that soon after the issue of such letters patent the plaintiff and defendant entered into an agreement, whereby it was agreed, ón the part of the plaintiff that the defendant should have the exclusive right of using the plaintiff’s oiler on mowing and reaping machines, and should have the right, but not exclusive, to use it on other machines; and on the part of the defendant, that it would use said oiler upon its mowing and reaping machines, and would pay the plaintiff therefor the reasonable value of such use. That the defendant soon thereafter proceeded to make and apply to mowing and reaping machines manufactured by it a device exactly similar to plaintiff’s oiler, except that in the plaintiff’s oiler the periphery of the conical head of the spring plug w~as scalloped, while in the device made and applied to such machines by the defendant such periphery was circular and not scalloped,” and “that the making and application of the oiler was done under and in pursuance of the licenses obtained by it from the plaintiff by virtue of such agreement.” Prior to any invention by the plaintiff an oiler was pictorially illustrated in a publication known as “Webster’s Dictionary,” and published in the year 1869, which oiler was substantially like that used by defendant.
    It does not appear that either plaintiff or defendant was aware of the publication in Webster’s Dictionary prior to the commencement of the action.
    The defendant continuously for a number of years advertised to the world the attachment of a patent oiler used by it as one of the advantages of its machines, its president testifying, upon the trial, that “there is no other patent oiler besides this of the doctor’s that I know of that are used on our machines,” After more than 120,000 machines had been manufactured, containing the oiler used, the plaintiff and defendant had some conversation about the price to be paid per machine, and the learned referee, in his opinion, after a careful discussion of the evidence upon the subject, arrives at the conclusion that the defendant’s president suggested five cents per machine, as proper compensation for the plaintiff, to which plaintiff assented.
    The referee found that the use of such device was worth five cents per machine, and rendered judgment in favor of the plaintiff.
    
      James Lansing, for resp’t; Esek Cowen, for app’lt.
   Parker, J.

The validity of the patent was not questioned by the answer or upon the trial, and the counsel for the defendant in his argument before this court asserted that the defendant admits the validity of the patent, but denies using the invention.

The plaintiff then had a valid patent which he had a right to use personally, or to sell to others the right to use it. The defendants large manufactures of mowing and reaping machines, sought to secure the exclusive right of using it upon its machines for the purpose, among other things, of advertising, as it subsequently did, as one of the advantages of its machines over others that “patent spring oilers are applied to all bearings.”

Whatever then may have been the prior state of the art upon the subject of patent spring oilers, according to the rule laid down by the court of appeals in Marston v. Swett (66 N. Y., 206, and 82 id., 526), the plaintiff had something to sell. The defendant desired to buy, and they made an agreement in and by which the referee finds that it was agreed on the part of the plaintiff, that the defendant should have the exclusive right of using the plaintiff’s oiler on mowing and reaping machines, and the right, but not exclusive, to use it on other machines, and upon the part of the defendant, it was agreed that it would use said oiler upon its mowing and reaping machines, and would pay plaintiff therefor the reasonable value for such use.

A careful examination of the evidence leads me to the conclusion that the referee was fully justified in finding the agreement to have been as above set forth. It is not claimed that the plaintiff in any respect violated his part of the agreement, and plaintiff testifies that because of the agreement with defendant, he refrained from selling the right to use the oiler to other parties. The plaintiff in consideration of the promises, gave up all advantage he had obtained, and the defendant by virtue of the agreement, enjoyed the exclusive monopoly. Here there was injury to one party and benefit to the other, either of which is sufficient to furnish a consideration for a promise. Marston v. Swett, 66 N. Y., 206-212.

Now the agreement on the part of the defendant was that in consideration of the right to the exclusive use he would use it upon all mowing and reaping machines, and would pay plaintiff a reasonable value for such use. By the terms of the agreement, therefore, it was not incumbent upon the plaintiff to show that the defendant did actually use it upon such machines. It was sufficient for him to show the number manufactured during the existence of the agreement. Neither can the defendant evade liability by proving that it did not use it, because his agreement was in effect that he would pay a reasonable value for its use upon all mowing and reaping machines manufactured, and it cannot now be permitted to escape payment as provided by the agreement by proof that without the knowledge of the plaintiff it omitted to place the attachment upon machines manufactured by it.

Proof of its failure to make use of the right of exclusive user, which, by virtue of the agreement, it actually enjoyed, constitutes no defense to the vendor’s right to demand the compensation which defendant in effect stipulated should be the reasonable value of the patent for one machine multiplied by the number manufactured during the pendency of the agreement.

The views thus expressed render it unnecessary to consider the question discussed by the referee, whether or not the defendant did use plaintiff’s device upon its machines.

The only remaining question is, what was the reasonable value for' the use of the invention upon such machines % The referee has found it to be five cents per machine. The reasons for his finding are set forth at length in his opinion and justifies his conclusion.

The judgment must be affirmed, with costs.

Lardón, Oh. J.,-and Fish, J., concur.  