
    The Wilcox & Gibbs Sewing Machine Co., Resp't, v. Jehiel W. Himes, App'lt.
    
      (Supreme Court, General Term, First Department,
    
    
      Filed January 13, 1893.)
    
    1. Patent—License to use.
    Plaintiff leased to defendant certain sewing machines, the lease containing a provision that the lessee should have the option at anytime to surrender the lease and the machines, provided he should have complied with all the obligations contained in the lease. Held, that a surrender of the license to use the machines could not be effected without their return.
    . % Same—Change op venue.
    In an action for the use of the machines, defendant, by his answer, admitted that he had not returned all the machines. Held, that a motion by him for a change of venue for the convenience of witnesses, by whom he expected to prove that he had surrendered his license to use the machines, was properly denied.
    Appeal from an order denying defendant’s motion to change the place of trial of this action from Hew York county to Sara-toga county on the ground of convenience of witnesses.
    The opinion of the special term is as follows:
    Ingraham, J.—-The question to be determined on this application is whether any of the witnesses mentioned in the moving papers, with the exception of the defendant, would be material witnesses on the trial of the action, and it seems to me clear that they would not. Defendant admits signing the contract annexed to the complaint, and admits receiving the machines mentioned in the contract. He having failed to make any return of the amount of work done by the machines, he was liable to pay to the plaintiff for the rent of the machines the amount specified in the contract. He alleges as a defense that he was “ induced and seduced ” to enter into the contract by various statements made as to the validity of certain patents owned by plaintiff, and he alleges that those statements were untrue. He does not allege, however, that he executed the contract relying upon those statements; nor does-he allege that upon the discovery of the untruth of the said statements he returned the machines to the plaintiff. So far as appears, he has kept possession of the machines during all the time; and before he can escape the liability for the rent reserved, he must elect to rescind the contract by returning the machines. Hor do I think the counterclaim alleged in the answer presents any issue to be tried. The negotiations between the parties must be deemed to be merged in the contract. The contract contained no guaranty that no other person had the right • to use the machines of the same character as those leased to the defendant. The plaintiff does “agree to indemnify the defendant in the undisturbed enjoyment, during the continuance of his lease, and while it is in force, of all the machines leased, hereby agreeing to save said lessee harmless against any claim or claims for alleged infringements of any patent or patents by such use of said machines, or by making or selling the said product.” But there is no allegation in the answer that the defendant has sustained any damage by reason of any claim against him that he was not authorized to. use the machines in question. The answer is very long, and inartificially drawn, and it seems to me clear that no defense is interposed to the action that would justify the defendant in refusing to pay the rent of the machines, nor is any counterclaim alleged upon which defendant could, recover.
    I think, therefore, the motion should be denied, with ten dollars costs to abide the event.
    
      Charles F. Doyle {Arthur H. Hasten, of counsel), for app’lt;
    
      Howson & Howson {Stephen A. WalJcer, of counsel), for resp’t.
   Van Brunt, P. J.

It may not be at all necessary to add anything to the opinion given by the court below upon the decision •of the motion. But, in view of the insistence upon the part of the appellant that the papers show that there are at least four witnesses necessary to the defendant to prove the defense set up in his answer of a surrender of the license, it may be proper to call attention to the condition of the pleadings in that regard. The contract between the parties, which is called a “ lease,” and which formed the basis of this action, contained a provision that the lessee should have the option at any time to surrender said lease and the machines mentioned therein, provided he shall have complied with, all and singular, the obligations of the lease, and settled his indebtedness to the lessor thereunder; and, upon such surrender of the said lease and machines, the lessee should be discharged and released from any and all obligations, agreements and covenants thereunder assumed by him. By the fifth paragraph of the answer the defendant alleges upon information and belief that on or about the 1st of January, 1885, he fully complied with, all and singular, the obligations of said contract, and settled his indebtedness to the plaintiff thereunder, and surrendered said license and machines received from the plaintiff. It is apparent that by this allegation the defendant did not intend to aver that he had returned to the plaintiff all the machines received from it, because the complaint alleges the receipt of a considerable number of machines; and the defendant, by the very next paragraph of his answer, admits the receipt of these several machines mentioned in the complaint, ten or more in number, and then denies that the same were used after January 1, 1885, and alleges the absolute return to and receipt by plaintiff of two of said machines, which is a clear concession that all the machines mentioned in the complaint had not been returned. The allegation of the surrender of the license, therefore, is merely the pleader’s conclusion as to a mixed question of law and fact. It seems to be reasonably clear that if the defendant did not return the machines in pusuance of the provisions of the lease, no surrender of the license actually took place; and, therefore, the allegation in the affidavit that certain witnesses are necessary to prove the surrender of the license and the machines becomes entirely immaterial, as there can be no surrender without the return of the machines, and bv the pleadings no such return is averred, and no such return or offer to return was ever made of the large majority of them. It would, therefore, seem that there were no witnesses who could be examined who could give evidence material to the defense alleged. We are of opinion, therefore, that for the reasons assigned in the court below, and for the foregoing reason, no ground was shown for changing the place of trial, and the motion was properly denied, and the order should be affirmed, with costs.

O’Brien and Follett, JJ., concur.  