
    Jacob Mark, App’lt, v. Elizabeth A. L. Hyatt and Thadeus Hyatt, Resp’ts.
    
      (Supreme Court, General Term, First Department,
    
    
      Filed October 16, 1891.)
    
    Injunction—Damages.
    In an action to cancel licenses to make and sell articles protected by a patent, Mrs. Hyatt recovered judgment which included an injunction against any further use, manufacture or sale of such articles, which was served on plaintiff, and he obeyed the same under advice of counsel, thereby suffering some loss. Held, that even if the court acted without authority in granting the injunction, the parties who procured it could not be held liable in a suit to charge them as wrongdoers without proof that they were aware of the lack of jurisdiction of the court, and that the complaint in this action for damages was properly dismissed.
    Appeal from a judgment dismissing the complaint on the merits at the close of a trial at circuit without a jury.
    
      Edward D. McCarthy, for app’lt; George W. Van Slyck, for resp’ts.
   Bartlett, J.

This controversy grows out of a suit in the superior court relating to certain patents of Elizabeth A. L. Hyatt, under which she had granted licenses to the firm of Ingalls & Mark, consisting of Joshua K. Ingalls and Jacob Mark. In that suit Mrs. Hyatt alleged that Ingalls & Mark had broken their agreement with her, and she sought a rescission of the license, an accounting for the royalties and injunctive relief, all of which were awarded her by the judgment. Mr. Mark was served with a copy of the judgment containing the injunction against any further use, manufacture or sale of the articles protected by the patents; and acting under the advice of counsel he obeyed it, thereby suffering some pecuniary injury, although the case does not disclose how much. He instituted the present action against Mrs. Hyatt and her husband, who assisted her in the superior court suit, to recover damages for the wrong which he alleges they committed against him in procuring an injunction which the superior court had no jurisdiction to grant.1

The proposition of the learned counsel for the appellant that the superior court had no authority to take cognizance of the case of Hyatt v. Ingalls at all, is not open to discussion since the decision of the court of appeals to the contrary. Hyatt v. Ingalls, 124 N. Y., 93; 35 N. Y. State Rep., 114. The most that can be claimed is that the part of the judgment which enjoined the use, manufacture or sale of the patented articles was in excess of the jurisdiction of the state court. At the circuit, Mr. Justice Barrett refused to hold as matter of law that this injunction was null and void; but he expressed the opinion that even if "it were so, the plaintiff was not entitled to maintain the present action, inasmuch as he was in nowise injured by the restraining order, which there never was any attempt to enforce, and which, if made without jurisdiction, amounted to nothing more than a futile judicial threat He, therefore, dismissed the complaint.

While it is clear that the injunction in the superior court was erroneously granted, it is not clear that it was granted without jurisdiction. The court of appeals speaks of the injunctive part of the decree as “ unnecessary or improper, because on the judicial rescission of the license the defendants could not further proceed under it, and the court had no power to restrain the defendants from acts of mere infringement of the plaintiff’s patent.” Hyatt v. Ingalls, supra. This language indicates that if the purpose of the injunction was simply to restrain any further action on the part of the defendants under the rescinded agreement, the injunction would not be deemed void, although it was needless.

But, however this may be, the dismissal of the complaint may be sustained on the ground that even if the superior court did act without authority in granting the injunction,.the parties who procured it cannot be held liable, in a suit of this character, to charge them as wrong-doers, without proof that they were aware of the lack of jurisdiction. Such is the rule laid down by the general term of the fourth department in Eldred v. Fawdrey, 16 N. Y. State Rep., 83. That was a suit to recover damages for a prosecution for libel alleged to have been maliciously instituted in the court of a justice of the peace; and it was held that the burden was upon the plaintiff to show that the defendant knew that the justice’s court had no jurisdiction to try the action for libel which he brought in that tribunal. In the case at bar, not only did the plaintiff fail to establish his allegations of malice, but the entire course of the defendants in prosecuting the superior court suit shows that they must have sincerely believed that the court had jurisdiction.

I think the judgment should be affirmed.

Vaw Brunt, P. J., concurs in result.  