
    Apollonia Warth, as Executrix, etc., of Albin Warth, Deceased, Appellant, v. J. M. Mertens, Otherwise, Known as Jacob M. Mertens or John Mertens, Individually and as Surviving Partner of the Copartnership of Theo. Dissell & Co., and also as Surviving Partner of the Late Copartnership of J. M. Mertens & Co., Respondent.
    
      License to a firm to use a patent cloth^cutting machine—liability of successors to the original firm who continue such use, where the license is personal to the original firm and prohibits the use by that firm of any other cloth cutting machine, which prohibition is violated by the successors.
    
    One Warth licensed Theodore Dissell and John Mertens, partners, doing business under the firm name of Theo. Dissell & Co., to use a patent cloth-cutting machine furnished by him, in consideration of a cash payment. and an agreement to pay semi-annual royalties. The license provided that it was personal to the licensees and should not be assignable to of available by any other person without the written consent of the licensor; that the payment of the royalty should not cease under any circumstances except as therein provided; that the licensees might terminate the payment of the royalty by delivering the machine back to the licensor and paying all royalties then due under condition that the licensees should not thereafter use or authorize or allow to be used, directly or indirectly, in their business or elsewhere, any other cloth-cutting machine until all the patents therein mentioned should expire.
    Theodore Dissell died in February, 1888, and Mertens thereupon formed, a partnership with one Alexander Dissell, under the firm name of J. M. Mertens & Co. In 1892 Alexander Dissell died, and Mertens formed anew partnership with his sons under the same firm name. Each of the two last-mentioned firms used the cutting machine and paid the stipulated royalties therefor without any formal assignment of the license or the formal consent of Warth.
    Subsequently, the firm of J. M. Mertens & Co. gave notice of its intention to redeliver the machine and terminate the royalties on October 8, 1898, but retained possession of the machine at the suggestion of Warth on the understanding that the royalties thereon should cease. In October, 1894, the then firm of J. M. Mertens & Co. began using another cloth-cutting machine.
    
      In an action brought by the executrix of Warth against Mertens individually and as surviving partner of Theo. Dissell & Co., and as surviving partner of J. M. Mertens & Co., to recover royalties at the rate prescribed by the contract, from October 8, 1893, to October 8, 1899, it was
    
      Held, that the use of the machine by the two firms which succeeded the original licensees obligated such firms to pay the royalties reserved by the original con-' tract, but that such use did not bind them to all the terms of the original contract;
    That when they returned the cutting machine, or its return was waived upon the express understanding that the royalties should cease, that terminated their liability for royalties;
    That the fact that one of the succeeding firms subsequently used another cutting machine did not impose any obligation on the original copartnership or on the defendant, as surviving member thereof or individually, to pay the royalties, as would have been the case if Dissell & Co., the original licensees or the surviving member of that firm, had, while conducting the firm business, made use of another cutting machine.
    Appeal by the plaintiff, Apollonia Warth, as executrix, etc., of Albin Warth, deceased, from a judgment of the Supreme Court in favor of the defendant, entered in the office of the clerk of the county of New York on the 15th day of November, 1901, upon the verdict of a jury, and also from an- order bearing date the 7th day of .November, 1901, and entered in said clerk’s office, denying the plaintiff’s motion for a new trial made upon the minutes.
    
      Rudolf Dulon, for the appellant.
    
      John Brooks Leavitt, for the respondent.
   Laughlin, J.:

. This is an action against the respondent individually and as the surviving member of the firm of Theo. Dissell & Co. and of the subsequent firm of J. M. Mertens & Co. for annual royalties on a cloth-cutting machine. The action is based on a contract in writing made between the plaintiff and the firm of Theo. Dissell & Co. on the 8th day of April, 1887. By that agreement the appellant’s testator licensed Theo. Dissell and John Mertens, who were conducting business as clothing manufacturers at Syracuse under the firm name of Theo. Dissell & Co., to use a patent cloth-cutting machine which he furnished and delivered to them in consideration of the payment of $1,150 and the agreement to pay a semi-annual royalty of $150. It was expressly provided that in the event of the destruction of the machine by fire or of its becoming worn out, the appellant’s testator should furnish and deliver to the respondent within a reasonable time a new machine for the consideration of $650; that the license was personal to the licensees and should not be assignable to or available by any other person without the written consent of the licensor ; that the payment of the royalty should not cease under any circumstances except as therein provided; that the licensees might terminate the payment of the royalty by delivering the machine back to the licensor and pay all royalties then due under condition that the licensees should not thereafter use or authorize or allow to be used, directly or indirectly, in their business or elsewhere any other cloth-cutting machine until all the patents therein mentioned should expire.

Theodore Dissell died in February, 1888, and the respondent thereupon formed a partnership with Alexander Dissell under the firm name of J. M. Mertens & Co. This firm continued the business until August, 1892, when Alexander Dissell died, whereupon the respondent took his sons into partnership and continued the business under the firm name of J. M. Mertens & Oo.

Each of these successive firms used the cutting machine and paid the royalties at the rate and times specified in the original contract, which, however, does not appear to have been assumed by them. There is no evidence of an assignment of the right to use the cloth-cutting machine or of any formal consent by the licensor. He seems to have permitted the use of the machine by the successive firms without exacting any other agreement than would be implied by law. On the 8th day of October, 1893, a semi-annual payment of royalty became due, and this was subsequently paid. Notice had been previously given of the intention of the firm of J. M. Mertens & Co. to redeliver the machine and terminate the royalties at that time. The appellant’s testator waived the delivery of the machine and J. M. Mertens & Go. retained it at his suggestion on the understanding that the royalties thereon should cease. . In October, 1894, the firm of J. M. Mertens & Go. began using another cloth-cutting machine, which it is still using.

The plaintiff claims that the defendant is liable for royalties at the rate prescribed by the contract from the 8th day of October, 1893, to the 8th day of October, 1899. The amended answer admitted that; since; October, 1894;.. the; defendant - has. been using and/allowing-to- be- usédi - iht his' business-,, individtially, a el'otHcut-, tihg machine;-other than/the -clotHcutting maehine mentioned ráridf described in the complaint' -down.to. about. June 1, 1898* when ho. entered into .a'..copartnership- with E. T; Mertens; and'G; B« Mertensüñder thé firm name of J . M. Mertens & Co., which film- continued to áse;iuéh.o.ther ciothrcutting machine; These specific admissions: are somewhat in. conflict with other parts of the pleading. - According to- the; testimony on, tire trial* however, these admissions were1 erroneous .and the defendant proved, • without '- objection -or except tion, that lie had not individually conducted; the business and that the- firm of; J. M. Mertens & Co. was for-rtied', ini. 3i8&2. - It appears' without controversy that upon the. dissolution- of the firm which-made; the. contract with plaintiff’s -testator, the-'partnership business was- ntitcoir-tinned in- the;, ñame of-the- surviving partner.-,-It'ii-' manifest, therefore,- that neither the firm which, made the contract - nor- the-(defendant as.’the. surviving ¡partner;!.usedany -other-cutting machine; in- 'the partnership business, than that for which the1 license was obtained;, -nor does it appear that said firm or the defendant, as the; surviving-member thereof assigned the:-right or otherwise attempted to;¡authorize, the; -Use- of the machine -by. any, succeeding ¡firm; "We have merely the bare fact that the cutting ’ machine was used by the successors; -of'the•.copartnership, which made thé-contract, hnt the inference is that that-was by common consént and constituted a new contract .arising by implication of law. "• Ho express agreement.appears to have been made on: the subject-raid the. licensees: were: by the contract precluded from assigning the-’ right to use. the• machine; , Thus it. ¡appears,.that-1 these successive : fiiuns-hád ñó authority'to. use .the machines-, except by; ¡consent,of! plaintiff’s -tfestator./1, Theif use of the, machine- with his. consent doubtless obligated them to! pay the royalty which they - did, but -it-1 did not bifid them -to all the-, terms of- the- original .contract,. When - they returned ¡the cutting máchine, -or itá return- was: Waived' tipon the express tinderstanding'that the royalties- eeaée, that ¡.terminated1 their liability for royalties. The fact that one of the succeeding-firms subsequently ra'sed another; cutting machine:'did'not impose atiy obligation on the original-copartnership: or oñ thé defendant as* sur^' viving memher thereof, or.individually, to pay the royalties, as would have been the ease had the licensees themselves or the surviving "member of the firm while conducting the firm business made use of another cutting machine.

It follows, therefore, that the.plaintiff failed to establish a cause, of action, and it becomes unnecessary to consider the Various exceptions to the charge in which the learned trial justice submitted to the jury, by apparent acquiescence of the parties, only the question as to whether the contract was rescinded and a parol agreement was made that the royalties should cease and the request to charge on that subject. .....

Although only a single question was submitted to the jury, a general verdict was rendered in favor of the defendant. . We think the court might have dismissed the complaint or directed a verdict in favor of the defendant and, therefore, there is no error which requires a new trial. ...

The judgment and order should be affirmed, with costs.'

Van Brunt, P. J., Patterson, O’Brien and McLaughlin, JJ., concurred. - •

Judgment and order affirmed, with costs.  