
    Childs et al. v. Tuttle et al.
    
    
      (Supreme Court, General Term, Fourth Department.
    
    September 19, 1889.)
   For majority opinion, see ante, 59.

Churchill, J.,

(dissenting.) The respondents are manufacturers of spring-tooth harrows, at Utica, N. Y. The defendants are fifteen in number: Willis H. Tuttle and five others, composing the firm of G. B. Olin & Co., of Canandaigua, N. Y.; A. W Stevens and another, composing the firm of A. W. Stevens & Son, of Auburn, N. Y.; and Dewitt C. Reed and two others, composing the firm of D. C. & H. C. Reed & Co., Hehemiah Chase and two others, composing the firm of Chase, Taylor & Co., and William L. Lawrence, all of Kalamazoo, Mich. These defendants are all engaged at their several places of residence in the manufacture of spring-tooth harrows, under the patent Ho. 201,946, known as the “Beed Patent,” which patent is owned by the firm of G. B. Clin & Co., for the Hew England states, Hew York, Hew Jersey, Pennsylvania, Delaware, Maryland, East and West Virginia, and by the firm of D. C. & H. C. Beed & Co., for the remainder of the territory of the United States.

The defendants claim that the harrow manufactured by the respondents is an infringement of this patent. This claim is denied by the respondents. In February, 1887, the firm of G. B. Clin & Co., after considerable friction with the respondents upon that question, commenced an action in the circuit court of the United States for the northern district of Hew York, based upon this claim of infringement. Issue was properly joined, and in March, 1887, and again in May, 1887, the plaintiffs in that suit moved the court for an injunction to restrain the defendants from marketing their harrows. These motions were heard on voluminous papers and exhibits, presenting from both sides this question of infringement, and were denied. Testimony was after-wards taken on both sides to a large amount, and at great expense, and in June, 1888, this evidence had been printed, and the case was pressed for a hearing upon the merits by the defendants in that action, but postponement was asked for by the plaintiffs. The hearing was postponed to September, and again, on the motion of the plaintiffs, and against the opposition of the defendants, to October, and was finally set down peremptorily for hearing November 20, 1888. At that date the defendants were ready, but the plaintiffs asked further postponement, which was refused by the court, and the complaint was thereupon dismissed on the motion of the solicitors of the plaintiffs in that action.

The respondents in the present action allege in their complaint that the defendants in this action, soon after the dismissal of the complaint in the action above referred to, entered into a combination to injure, harass, and annoy the respondents, and to destroy their business as manufacturers of spring-tooth harrows, and that as a means to be employed for this purpose numerous suits were to be brought in the circuit courts of the United States against the purchasers of respondents’ harrows, and that such suits were to be brought, not in the belief that the harrows manufactured by the respondents were an infringement upon the Beed patent, but for the purpose of intimidating respondents’ customers, and thereby injuring and destroying their business. The complaint in this action asks for perpetual and preliminary injunctions to restrain the defendants from commencing actions for the purpose above stated. Upon the verified complaint and accompanying affidavits a preliminary injunction was granted by a justice of this court. The special term, upon an order to show cause, granted upon affidavits presented by the appellant, and upon the original papers, and additional affidavits presented by the respondents, refused to vacate the injunction. From the order refusing to vacate, this appeal was taken to the general term.

To restrain by injunction the bringing of suits, or other acts calculated to intimidate customers or destroy the business of a rival, is an old and well-established right of courts of equity, and may be exercised where the party to be restrained is within the jurisdiction of the court, although the effect of the injunction may be to restrain the bringing of actions in the courts of other states or countries. 2 Story, Eq. Jur. §§ 875, 899, 900. This is conceded by the learned counsel for the appellant in his printed brief. Story, however, in stating the doctrine, makes this exception: “There is one exception to this doctrine, which has been long recognized in America; and that is that the state courts cannot enjoin proceedings in the courts of the United States, nor the latter in the former courts. This exception proceeds upon peculiar grounds of municipal and constitutional law, the respective courts being entirely competent to administer full relief in the suits pending therein.” 2 Story, Eq. Jur. § 900. This exception is insisted upon by the learned counsel for the appellant as fatal to the maintenance of this action. It will be observed that Story gives the entire competency of the courts referred to to administer full relief as a foundation for the exception; but in the particular case presented by the complaint in this action United States courts are powerless to grant the relief sought. The appellant, with seven other of the defendants in this action, and also the respondents, are residents of the state of New York, and the courts of the United States have no jurisdiction of an action of this sort between such parties. Act Cong. Sept. 24,1789, § 11; Hyde v. Ruble, 104 U. S. 407; Blake v. McKim, 103 U. S. 336.

A case, similar in its features to the present one, was recently before the United States circuit court for the northern district of Illinois,—Emack v. Kane, 34 Fed. Rep. 46, decided February 27, 1888. It was an action brought by the manufacturer of a patented article to restrain the manufacturers of a rival patented article from issuing to the complainant’s customers “circulars threatening all who should buy from the complainant, or deal in his slates, with lawsuits, upon the ground that the complainant’s slate was an infringement of the other’s patent.” There were circumstances in that case, as in this, tending to show that the suits threatened were not for the purpose of settling this question of infringement, but for the purpose of intimidating the complainant’s customers, and injuring his trade. The court held that in such actions a court of equity would not pass upon the validity of a patent, but might consider the-state of the art, in connection with the defendant’s conduct, to ascertain his good faith in issuing the circulars; and the court also held that an injunction should issue, since the proof shows “that the charges of infringement were not made in good faith, but with malicious intent to injure complainant’s business.” In that case the parties resided in different states, and the United States courts had unquestioned jurisdiction. It will be seen upon the authority of that case that, if all the defendants in this case had been residents of the state of Michigan, this action for the precise relief sought might have been maintained in the United States circuit courts. Act Sept. 24, 1789, § 11. The absence of jurisdiction in the courts of the United States to entertain this action between the parties to it, and so to grant the relief sought, takes this case out of the exception stated by Justice Story. Injunction is the right arm of the court of equity, by which it reaches wrongs beyond the remedy of the ordinary processes of the courts of law. The right to use it in a case of this kind, when, if the complaint be true, great injury is threatened, otherwise remediless, should not be denied except upon the judgment of a court of last resort. If the respondents upon the trial of this action establish the facts charged in the complaint, (which the papers presented show to be not improbable,) the case will then be in a situation in which such a judgment may be obtained. The order appealedfrom should be affirmed, with costs.  